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Thursday, 22 August 2013

Good news: speedypats die as Government listens

Speediest isn't
always best
Back in April, this Kat expressed his concern (note for readers, 'concern' is a typically British understatement for 'anxiety bordering on panic') that the UK Intellectual Property Office (IPO) was in danger of introducing what he termed 'speedypats' -- patents granted in just 90 days from start to finish.  A month later, Patexia's Daniel Porter argued that speedypats might work, if correctly handled, but the Kat remained unconvinced.  Tonight, following alerts from a number readers and a tweet from katfriend Barbara Cookson, the Kat finds himself beaming beatifically at the happy news that, having announced its folly in haste, the IPO has renounced it at leisure, here. According to a reasoned and generally reasonable document from the IPO, Government Response: Accelerated patent processing at the Intellectual Property Office: Introduction of a superfast service (14 pages, much of which is blank):
"34. There would not appear to be a great desire from users of the patent system for the proposed superfast patent process to be introduced. While some respondents to the consultation would welcome the introduction of an additional optional service, only a minority indicated that they would expect to use it, and several indicated that the acceleration services already available [especially for green patents: see here] are adequate.

35. Respondents to the consultation highlighted several significant drawbacks to granting a patent in such a short timescale, as outlined in paragraphs 24-30 above. It is envisaged that measures could be introduced to overcome or mitigate against most of these issues, at least to an extent. In particular:
• Superfast applications could be highlighted at an early stage to alert third parties to the shortened period in which to make observations, and a notification service could be implemented (though the burden on third parties to make prompt observations would remain).

• The IPO could reserve the right to refuse superfast requests to manage demand and ensure that there is no impact on standard applications.

• Applicants could be clearly warned of the potential disadvantages of early publication prior to making a superfast request.
36. However, it is not possible to mitigate against the risk of grant of invalid patents, which would then need to be amended or revoked. This is an unavoidable consequence of granting a patent in such a short timescale when the patent system worldwide is based on a standard publication period of 18 months. This issue was arguably of most concern to consultation respondents [and some Kats, notes Merpel], due to the uncertainty it could cause for both patent holders and third parties.

37. In light of these concerns, the evidence that the service would be unlikely to be useful, and the way in which existing acceleration services meet users’ needs, the Government has decided not to implement the proposed superfast service or make any changes to existing acceleration services".
This Kat is thrilled to find a real live example of the Government listening to expert opinion [and to this blog ...] and accepting that superfast patents were a hare-brained scheme. Since this is August, he doubts that there will be many members of the the European Commission's crack Patent Policy Enforcement Unit around to take note of this undoubtedly unfamiliar notion.

"Slow down, you move too fast" here
Slow and steady here

18 comments:

Tom said...

"Patent Policy Enforcement Unit"? Do I miss something?

Anonymous said...

Tom, did you never wonder how we ended up with the version of the unified patent court we got, despite the protestations, exhortations, explanations and exclamations of the various bodies of experts who were happy to accept a UPC, but one that was fit for purpose?

Suleman said...

Given the problems with 3D marks, I wonder how the authorities will cope with '4D', i.e. moving marks. Presumably we're not too far away from the day when retail products will be packaged in flexible TV screens capable of displaying a GIF or Vine-like moving image to portray a brand.

ex-examiner said...

I think they must be breathing a sigh of relief at the lack of interest: the Jan 2013 Steering Board Minutes indicate that the IPO would not have been able to deliver had there been a demand for fast tracking due to lack of staff:

7.9 The NEDs had a number of questions regarding the report. Would the 90 day patent fast track process rely on the goodwill of staff? In trying to meet the aspirations of customers was there a risk that the IPO would not have the staff to do it because of overtime arrangements. It was clarified that the 90 day service would be useful for some applicants but there would not be a major demand for it. Given the potential issue relating to overtime anything new would be impossible to achieve. The patent box would also impact. The inability of the IPO to grant patents quick enough would be a problem.

Anonymous said...

Throughput speed is merely one of the traditional Deming factors.

'Speed' for its own sake is much like 'change' for its own sake.

Mark said...

"Anything new would be impossible to achieve" sounds like a variation on the ancient Spanish proverb:

Que no haya novedad

Mark Summerfield said...

The EPO has more sense than to grant a patent within 18 months of its priority date. Other offices, however, are not so cautious (http://blog.patentology.com.au/2013/05/the-hazards-of-fast-tracked-patents.html).

The USPTO in particular, under its 'Track One' program, aims to reach a final decision (allowance or rejection) within 12 months. Under the first-to-invent rule this might have been OK much of the time. But now, under first-to-file, with foreign filings providing an effective priority date, there is no way a US examiner can be aware of all pertinent prior art with the first 12 months.

Where applicants have a genuine need for rapid processing, it is usually because the technology in question is fast-moving. In such fields, I wonder whether the 18 month non-publication period is too long. Maybe nine months' gestation would be enough?

Anonymous said...

I think the superfast patent had its merits, though perhaps now is not the best time for it. Perhaps we need to rethink this idea of pre-filed post-published applications being citable as prior art. The applicants of the earlier applications could always choose early publication if they want to be citable prior art against competitor cases, otherwise they would have to live with not being cited on later cases until their case was published. We all accept 18 months as the publication period, but perhaps it is too long in a world where change is becoming more rapid.

Barbara Cookson said...

Wouldn't it be nice if the world of consultation started to address the possibility of eliminating some of the super slow patent applications particularly at the EPO. There is nothing more depressing than to try and ascertain the risk of infringement of a European patent application that has been sitting without even a search report past its 4th birthday but still manages to appear ominously in later applicant's search reports so that clients say: is this a problem? And you say: no idea! or more probably something more pretentious involving a fee estimate.

Anonymous said...

Mark Summerfield,

I have to wonder how you feel then about the non-publication route available in the US.


Anonymous at 14:08,

I may be misunderstanding you, but whether or not an applicant cares is very much besides the objective point of novelty/obviousness, and any such consideration of what the applicant wants when he chooses a publication path is quite immaterial.


Barbara,

Under what legal doctrine would you posit that such an action - generally largely outside the control of the applicant - could be considered fair and just? Sorry, but 'easier for you' is not a valid reason.

MaxDrei said...

To Barbara Cookson: how much difference to your EU clearance opinion does it make, whether you are reviewing an A publication or an EPO B publication? I mean, we all know by now what meets the requirements of the EPC, and we know it better than most EPO Examining Divisions. Sometimes the EPO issues claims that are likely invalid. What the Opposition Division thinks is not important. What matters is what DG3 or a national court says, after inter Partes proceedings, and we can make a fairly confident estimate of that.

Of course, it matters how many divisionals Applicant files. But the EPO put a cap on how much time that uncertainty can go on for.

For as long as the EPO is tough on Art 123 issues, you have a high level of confidence when it comes to clearance studies for Europe.

Or not?

Ron said...

I find it ironic that 18 months used to be the statutory period for putting all applications in order up to and including the 1949 Patent Act as originally passed. The statutory period had to be extended to cope with the huge backlog that had built up during WWII (in part to avoid the need for the Comptroller to grant extensions on a case-by-case basis), and we have become used to a period of several years ever since.

Darren Smyth said...

To MaxDrei
"Or not", I think. Often with an A publication, there is a broad claim that would be infringed but is probably invalid. But how will the applicant amend? Will the application be amended to an arguable valid claim that is still infringed, or to one that is not infringed? Not until grant is this uncertainty resolved. Patent attorneys often draft for breadth to begin with to preserve flexibility. This creates uncertainly for third parties during the pendency of the application. Art 123 is only a part of the issue.

Anonymous said...

Ron,

I would take your comment one (giant) step further and point out that (at least in the US) the notion of publishing anything pre-grant invades the very nature of the Quid Pro Quo of a granted patent.

The move at the time for the US to even publishing at 18 months was not universally applauded, and protections to applicants were required. At that time as well the notion of PTA was created in order to spur the Office to have provided a clear view of the chances of obtaining patent right prior to the risk of publication so that the applicant, faced with a less than desired success of obtaining patent coverage could instead expressly withdraw the application and maintain his knowledge as a trade secret.

Many lose sight of this with calls for even quicker publishing. "Sanctity" of what the the applicant is willing to divulge and respect for the applicant is largely missing in calls for faster publication. It is as if the Quid Pro Quo is being rewritten as the Quo being a mere chance at patent rights for the Quid of sharing one's knowledge. In the US, this is certainly an unwelcome aberration and a degradation of the value associated with the patent process.

MaxDrei said...

Thanks Darren. You ask, how will Applicant amend as if the amendment will be as mysterious as what one might draw out of a bran tub. Article 123(2) is brutally restrictive though, when it comes to intermediate generalisations, whether made in the presently pending application or in the divisionals branched off from the pending application. I'm thinking of that Israeli stent maker, who ran up about 6 generations of divisionals and sued an American rival in Holland on each generation as it came to issue. They were all opposed in the EPO though, and successively knocked down by the Technical Board of Appeal, leading the Dutch judge, in his exasperation, to order the patent owner to stay out of his court till he could come back with a patent upheld by the EPO's Board of Appeal. There was a report of this in CIPA J. some years back.

You are never free of uncertainty till you've got to Karlsruhe or the House of Lords, or both. Question is though, is there so much uncertainty that a workable clearance opinion is beyond formulation. I think that when you know client's product and have the WO and the EPO search report, you can formulate a useful opinion about the possibility of emergence of a claim that is infringed and resistant to all attacks on its validity.

Anonymous said...

Re MaxDrei Saturday, 24 August 2013 18:34:00 BST:

what is a number of the mentioned patent application, a Dutch case reference number? Thank you in advance for the answer.

Anonymous said...

I would add to MaxDrie's comment of 18:34 and note that both in the US and other offices that the concept of no new matter serves the same result.

If you know the field, then it simply does not matter how many continuations or divisions may later occur. Note the two year mark (at which point broadening re-issues can no longer occur) and move on.

MaxDrei said...

re the above: Owner of the stent patent was definitely Medinol. Accused of infringement: Boston Sci, or perhaps J&J.

Or was it both of those two American stent titans? I forget now.

Googling will probably deliver more useful info.

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